Qing Nmn. Stella et al.

Patent Trials and Appeals Board

Nov 18, 2019

13865449 - (D) (P.T.A.B. Nov. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/865,449 04/18/2013 Qing NMN STELLA 12399 8590
27752 7590 11/18/2019
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
PROSSER, ALISSA J
ART UNIT PAPER NUMBER
1619
NOTIFICATION DATE DELIVERY MODE
11/18/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte QING STELLA, CURTIS BOBBY MOTLEY,
VICTOR MANUEL ARREDONDO, and CYNTHIA ANN GARZA

Appeal 2018-003294
Application 13/865,449
Technology Center 1600
____________

Before ULRIKE W. JENKS, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as The
Procter & Gamble Company. Br. 1.
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Application 13/865,449
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STATEMENT OF THE CASE
Claims 1–8, 13–18, and 21 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief. Claims 1 and 13 are representative of
the claims on appeal, and read as follows:
1. A method of increasing skin chroma, the method comprising
depositing about 5 μg/cm2 or more of a hydrophobic benefit
agent comprising a sucrose polyester which exhibits a total
surface energy of about 20 mJ/m2 to about 30 mJ/m2 and a
change in heat of fusion of about 50 J/g or less, and a soy
oligomer on the skin, wherein the hydrophobic benefit agent is
deposited on the skin via a multi-phase personal cleansing
composition comprising:
a structured cleansing phase comprising sodium tridecyl
ether sulfate, a zwitterionic surfactant comprising a betaine, an
electrolyte, and an organic cationic deposition polymer; and
a benefit phase comprising the sucrose polyester and the
soy oligomer, wherein the soy oligomer is present in an amount
of about 2% to about 10%, by weight of the benefit phase, and
where the composition is applied once a day for 3 or more days
and the skin chroma increases by about 0.3 units or more versus
a water control at 3 hours after the treatment on day 3.
Br. 7 (Claims Appendix).
13. A method of increasing skin chroma, the method
comprising improving skin hydration by applying to skin a
multiphase personal cleansing composition comprising:
a benefit phase comprising a benefit agent comprising a
sucrose polyester which exhibits a total surface energy of about
20 mJ/m2 to about 30 mJ/m2 and a change in heat of fusion of
about 50 J/g or less and about 2% to about 10%, by weight of
the benefit phase, of a soy oligomer; and
a structured cleansing phase comprising sodium tridecyl
ether sulfate, a zwitterionic surfactant comprising a betaine, an
electrolyte, and an organic cationic deposition polymer,
wherein the level of hydration is in accordance with at least one
of the following: a Corneometer improvement of 0.3
Corneometer units or more as compared to a water control after
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Application 13/865,449
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treatment of at least once a day for at least 4 days when
measured at 24 hours after the fourth treatment in accordance
with the Corneometer Testing Method; a dry skin grade
improvement of about 0.4 units or more versus the water
control after treatment of at least once a day for at least 3 days
when measured 3 hours after the third treatment when measured
in accordance with the Dry Skin Grade Method; or a
combination thereof.
Id. at 8–9 (Claims Appendix).
Appellant requests review of the following grounds of rejection made
by Examiner:
I. Claims 1–8 and 21 under 35 U.S.C. § 103(a) over
Wagner2 as evidenced by CAS (sodium tridecth sulfate)3
and Halpern,4 in view of Starch,5 Kitko,6 Hoffman,7 and
Abbas.8

2 J. A. Wagner et al., US 2006/0079418 A1, published April 13, 2006
(“Wagner”).
3 CAS Registry Number: 54116-08-4 (sodium trideceth sulfate) (2016)
(“CAS”).
4 A. Halpern, The surface tension of oils, JOURNAL OF PHYSICAL AND
COLLOID CHEMISTRY, 53:895-897 (1949) (“Halpern”).
5 M. Starch, New Cosmetic Ingredients Based on Soybean Oil, IP.com Nu.
IPCOM0015410D (2007) (“Starch”).
6 D.J. Kitko et al., US 2009/0246236 A1, published October 1, 2009
(“Kitko”).
7 L. Hoffman, Benefits of an emollient bodywash for patients with chronic
winter dry skin, Dermatologic Therapy 21:416–21 (2008) (“Hoffman”).
8 S. Abbas, Personal cleanser technology and clinical performance,
DERMATOLOGIC THERAPY 17:35–42 (2004) (“Abbas”).
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Application 13/865,449
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II. Claims 13–18 under 35 U.S.C. § 103(a) over Wagner as
evidenced by CAS and Halpern, in view of Starch, Kitko,
and Heinrich.9
I. Obviousness over Wagner as evidenced by CAS and Halpern, in view
of Starch, Kitko, Hoffman, and Abbas
Examiner finds that Wagner teaches a multiphase personal care
composition for application to skin or hair. Final Act. 6. Examiner finds
that Wagner’s cleansing phase comprises sodium tridecyl ether sulfate,
betains, electrolytes, and sodium chloride. Id. at 7. Examiner finds that
Wagner’s benefit phase comprises hydrophobic materials. Id. In addition,
Examiner finds that Wagner also teaches including organic cationic
deposition polymers as well as colorants. Id.
Examiner acknowledges that Wagner does not teach the inclusion of
sucrose polyester, soy oligomer, or a particular increase in skin chroma.
Id. at 8. Examiner relies on the teachings of Starch, Kitko, Hoffman, and
Abbas for these limitations. Examiner determined:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to substitute the
oligomeric soy wax in combination with vegetable oils as
taught by Starch for the petrolatum hydrophobic material in the
benefit phase of the multi-phase personal care composition of
Wagner because Starch teaches the soy wax in combination
with vegetable oils is a suitable replacement for petrolatum
which has fallen out of favor with consumers because
petrolatum is not natural/sustainable. . . .

9 U. Heinrich, Multicentre comparison of skin hydration in terms of
physical-, physiological· and product-dependent parameters by the
capacitive method (Corneometer CM 825), INTERNATIONAL JOURNAL OF
COSMETIC SCIENCE 25:45–53 (2003) (“Heinrich”).
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Id. at 11. Additionally, Examiner determined that sucrose polyester
conditioning actives can “replace conditioning actives like silicones or can
be used in combination with other conditioning actives in order to maximize
the conditioning activity.” Id. at 12.
Appellant contends that Examiner has not presented a prima facie case
of obviousness. Br. 3. Even if a prima facie case was made in the first
place, Appellant argues its showing of unexpected results should overcome
the prima facie case. Id.
The issue is: Does the preponderance of evidence of record support
Examiner’s conclusion that the combination of references renders obvious a
skincare composition as recited in claim 1?
A. Findings of Fact (FF)
1. Wagner teaches a personal care composition providing both
cleansing properties and conditioning benefit to the skin.
Wagner ¶¶ 3, 13, 133–136.
2. Wagner teaches a structured cleansing phase comprising
branched anionic surfactants including sodium trideceth sulfate.
Wagner ¶ 47. Sodium trideceth sulfate is another name for
sodium tridecyl ether sulfate. See CAS.
3. Wagner teaches a structured cleansing phase comprising
zwitterionic surfactants including betaines, such as lauryl
amidopropyl betaine. Wagner ¶ 56.
4. Wagner teaches a structured cleansing phase comprising an
electrolyte, preferably sodium chloride. Wagner ¶ 58.
5. Wagner teaches a structured cleansing phase comprising an
organic cationic deposition polymer (Wagner ¶ 96), such as for
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example “cationic cellulose derivatives. Preferred cationic
cellulose polymers are the salts of hydroxyethyl cellulose
reacted with trimethyl ammonium substituted epoxide, referred
to in the industry (CTFA) as Polyquatemium 10.” Wagner
¶ 97.
6. Wagner teaches a benefit phase that is preferably anhydrous,
and typically comprises hydrophobic materials. Wagner ¶ 62.
Wagner teaches hydrophobic diglycerides and triglycerides
derived from plant sources. Id. ¶ 70. Wagner teaches suitable
“hydrophobic materials are selected from the groups of
petrolatum, mineral oil, paraffins, polyethylene, polydecene,
dimethicones, alkyl siloxanes, lanolins.” Id. ¶ 76. Wagner
teaches that benefit phase “comprises hydrophobic materials
having a Vaughan Solubility Parameter (VSP) of from about 5
to about 15 (cal/cm3)½, preferably from about 5 to about 10
(cal/cm3)½, more preferably from about 6 to about 9
(cal/cm3)½.” Id. ¶ 63.
7. Wagner teaches optional ingredients such as pigments.
Wagner ¶ 108.
8. Examiner finds that Halpern teaches “the surface tension of
liquid petrolatum ranges from 33.1 to 23.4 dynes/cm (mJ/m2) as
the temperature increases from 20 to 130 °C.” Final Act. 7
(citing Halpern Table 2).
9. Starch teaches the use of soy wax, either alone or in
combination with vegetable oils in personal care applications.
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Starch 3.10 Starch teaches using soy wax (metathesized,
hydrogenated soybean oil) “in combination with vegetable oils
as a replacement for petrolatum.” Id. “HY 3050 Soy Wax is
compatible with a wide variety of triglyceride oils and that
these soy wax/vegetable oil blends offer a good alternative to
the use of petrolatum in many types of skin and hair care
formulations.” Id. at. 7.
10. Starch explains that:
In personal cleansing formulations such as bar soaps and
liquid body wash products, it is often desirable to include
an emollient to provide a skin conditioning benefit. The
skin conditioning benefit is designed to offset the effects
of the cleanser which can remove too much of the skin
lipids, leaving the skin feeling dry and rough. The
emollients of choice for liquid cleansing products are
emollient oils such as mineral oil, petrolatum, vegetable
oils, or silicones.
Starch 13.
11. Kitko teaches that “there is a need to find a conditioning active
which can be derived from a natural source, thereby providing a
conditioning active derived from a renewable resource,” as
opposed to petroleum-based silicone. Kitko ¶ 5. “Sucrose
polyesters are derived from a natural resource and therefore, the
use of sucrose polyesters as the conditioning active can result in
a positive environmental impact.” Id. ¶ 25. Kitko teaches the
inclusion Sefose, a sucrose polyester in hair conditioning

10 Starch has no pagination so the page counts starts with the cover page as
page 1.
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products. Id.

B. Principle of Law
“If the claim extends to what is obvious, it is invalid under § 103.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). It is obvious to
those skilled in the art to substitute one known equivalent for another. See
In re Omeprazole Patent Litig., 483 F.3d 1364, 1374 (Fed. Cir. 2007); see
also KSR, 550 U.S. at 416 (holding that “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results”).

C. Analysis
Appellant’s arguments do not persuade us that the preponderance of
the evidence fails to support Examiner’s prima facie case of obviousness.
Wagner teaches a multiphase personal care composition containing both a
cleansing phase and a benefit phase. FF1–FF7. With respect to the benefit
phase, Wagner teaches the use of hydrophobic materials such as petrolatum,
a petroleum-based product, mineral oils, and paraffins among others. FF6.
Examiner finds that petrolatum has the requisite surface tension as claimed.
FF8. Examiner explains that “‘[c]hroma’ refers to a parameter that measures
skin color saturation. A color having a high chroma is vivid, almost
completely free of white, while a color having a low chroma is dull, washed
out, and pale in appearance.” Ans. 5 (citing Spec. 3:5–7). Examiner finds
that the broadest reasonable interpretation of increasing skin chroma is
measuring a change/decrease in skin dullness/paleness. Id. at 6. Examiner
finds that Wagner’s benefit phase would achieve the instantly claimed skin
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chroma increases because the change is a result associated with “the daily
application of multi-phase personal care compositions according to
Wagner.” Id. at 8.
Starch teaches the use of soy wax as an alternative to petrolatum.
FF9. In addition, Starch teaches that when formulating cleansing
compositions it is important to include benefit agents that offset the effects
of the cleanser in order for the skin not to feel dry. FF10. In other words,
Starch provides a reason to include benefit agents in a cleansing product in
order to ensure that the skin retains moisture. Kitko teaches the use of
naturally derived sucrose polyester benefit agents that have the desirable
environmental quality of being a renewable product. FF11.
Applying the KSR standard of obviousness to the findings of fact, we
agree with Examiner that it would have been obvious to an ordinary artisan
to substitute renewable benefit agents disclosed in Starch and Kitko for the
petroleum-based benefit agents taught in Wagner.
Because Examiner presents a prima facie case of obviousness, we
consider whether Appellant submits sufficient evidence or argument in
rebuttal. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Evidence
rebutting a prima face case of obviousness may include “[e]vidence of
unexpected results.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed.
Cir. 2007).
Appellant’s present a comparison between example X and example 12
as measured by in vitro chroma. Br. 3. The results in the table below show
compositions containing 90% cleansing phase and 10% benefit phase.
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The table shows in vitro chroma measurements with samples containing a
sucrose polyester only or a soy polyester only benefit phase. Br. 3. In
addition, Appellant relies on examples 13, 14, and 15 as set out in Table 4 of
the Specification to show the effects of replacing soy oligomer with sucrose
polyester as a benefit agent. Id.
Appellant contends, without evidence, that example X, example 12,
and examples 13–15 of the Specification are statistically different, however,
Appellant’s Specification does not provided any statistical analysis. Br. 4
(“Examples 13–15 are statistically different, even where a difference in
chroma is less than 1.”) “Attorney[’s] argument is no substitute for
evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Additionally, Examiner points to peculiarities in the data set presented in the
Specification. Specifically, Examiner identifies Example 2 (see Spec. 25,
Table 2) as containing 15% soybean oil showing an increase skin chroma by
1.2 while Example 8 (see Spec. 26, Table 3) containing 10% soybean oil
increase chroma by 1.5. See Ans. 8.
Here, “the skin chroma is lower when 50% more soybean oil is
applied via compositions comprising the same cleansing phase.” Id. Given
the small value of the difference, and the lack of any evidence of a statistical
analysis, we are not persuaded by Appellant’s argument that the data
presented in Appellant’s Specification is sufficient to demonstrate a
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Application 13/865,449
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statistically significant difference between chroma values in the inventive or
control samples. Consequently, we are not persuaded by Appellant’s
argument that the data rebuts Examiner’s rejection.
“When unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); see
also Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed.
Cir. 2004) (A showing of “new and unexpected results” must be “relative to
the prior art.”). Here, the data presented in the Specification does not
compare the inventive samples to the closest prior art, which is Wagner.
Evidence of unexpected results requires showing a difference between
claimed property and the closest prior art. Differences in degree, however,
are not as persuasive as differences in kind when used as rebuttal evidence.
See Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc., 752 F.3d
967, 977 (2014); see In re Aller, 42 C.C.P.A. 824, 827 (1955); In re Harris,
409 F.3d 1339, 1344 (Fed. Cir. 2005). We recognize that there are
differences in vitro chroma units when including 100% sucrose polymer and
100% soybean oil as the benefit phase component. Br. 3 (Table comparing
Examples 12 and X). We also recognize that the Specification shows that
the inclusion of soy oligomer in a benefit phase also contributes to
differences in vitro chroma value readings. See Spec. 26 (Table 3),
27 (Table 4). Pointing out that there are differences in the data, however, is
insufficient to show a “difference in kind” required to be persuasive of
unexpected results.
Examiner notes that Table 3 of the Specification measures skin
chroma values with samples containing soy oil and soy oligomer. This
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combination “is similar to the combination of soybean oil and soy
oligomer/wax taught by Starch” to be a good petrolatum replacement.
Ans. 8; Starch 3, 7 (“adding about 10% of HY 3050 to partially
hydrogenated soybean oil produces a blend that is similar to petrolatum in
consistency and can be used as a petrolatum replacement in many
applications.”). Thus, mixing hydrogenated soybean oil with soybean oil to
replace petrolatum in a lotion produces an expected moisturizing effect. See
Starch 10 (“the petrolatum and the HY 3051 produced very similar
moisturization effects. . . . This data indicates that the partially
hydrogenated soybean oil is essential for providing the moisturizing effect in
the HY 3051.”). “Expected beneficial results are evidence of obviousness of
a claimed invention. Just as unexpected beneficial results are evidence of
unobviousness.” In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
In sum, weighing Appellant’s arguments over and evidence of
secondary consideration against the evidence relied upon by Examiner, we
find that the method of claim 1 is no more than “the predictable use of prior
art elements according to their established functions,” KSR, 550 U.S. at 417,
and that the unexpected result advanced by Appellant is inadequate to
establish nonobviousness.

II. Obviousness Wagner as evidenced by CAS and Halpern, in view of
Starch, Kitko, Heinrich
Examiner finds that Wagner does not teach a method of increasing
skin chroma by improving skin hydration with the application of benefit
phase containing sucrose polyester. Final Act. 14. Examiner relies on
Heinrich for teaching that measuring skin hydration using the Corneometer
as an efficient way to measure water content of the stratum corneum in order
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to improve comparability of results when testing subjects’ skin. Id. at 15.
Based on the combined teachings of Wagner and Starch, Examiner finds that
there would be a reasonable expectation that substituting HY3051, which is
a blend of 10% soy wax in soybean oil, for petrolatum taught by Wagner
would result in an improvement of skin feel. Id. at 16. Examiner concludes
that a person of ordinary skill in the art would have had a reasonable
expectation of success in combining the references, because Wagner teaches
that hydrophobic materials, including vegetable oils, are useful for skin
conditioning “via the deposition of sufficient amounts of skin conditioning
agents.” Id. at 17.
Appellant does not provide additional arguments beyond those
presented with respect to claim 1 discussed above (see I.). Because
Appellant’s rebuttal based on unexpected results even after reconsideration
of the entire merits of the case is not sufficient to outweigh Examiner’s
conclusion of obviousness, we affirm the rejection as set out in the Final
Office Action and Answer.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 21 103 Wagner, CAS,
Halpern, Starch,
Kitko, Hoffman, Abbas
1–8, 21
13–18 103 Wagner, CAS ,
Halpern, Starch,
Kitko, Heinrich
13–18
Overall
Outcome
1–8, 13–
18, 21

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED